眾律國際法律事務所/眾律國際專利商標事務所

商標註冊之優點 律師張源傑

一、商標權於註冊後方獲得保障[1]

我國商標制度是以註冊保護為原則。因此，商標依法申請註冊取得商標權後，註冊商標除了可以自己使用及授權他人使用外，還可以排除他人以相同或近似的商標指定使用於同一或類似商品或服務上。因此，商標如欲獲得法律上權利之保障，必須依法註冊；註冊後其保護之效力及於全國。

二、對於侵害商標權之人請求損害賠償[2]

如果有任何人未經商標權人同意使用該註冊商標，有侵害商標權人使用、收益或有侵害商標權之可能情形，商標權人可以請求排除或防止商標權被侵害；對於故意或過失侵害商標權的人，也可以請求損害賠償。

三、商標權具有財產價值[3]

商標權是一種財產權，可以將註冊商標轉賣或用以設定質權，以增加資產價值。馳名之商標具有高度的市場價值，更是有加以保障之必要。倘若不予註冊，日後商標被廣為使用時，甚至有可能成為通用標章[4]而被各界合法使用，喪失商標權人原本訂立標章之目的。

四、防止混淆、搶註、仿冒等惡意行為[5]

商標註冊後，因為具有法律上效力，可以有效防止他人註冊相類似之商標；或是在商標權利人註冊之前予以搶註，造成原本權利人權利維護之困擾；也可以依商標權人之身分取締仿冒行為，遏止犯罪行為發生。

註冊商標的好處，不僅能保護現有之市場不被他人以不正當方式侵犯，增強商標的市場價值。保障商標不被他人使用，維護商品的信譽和形象。註冊了的商標不僅可以增強消費者的認同感，還可以增強企業自身維護品牌價值的信念，提升品牌形象，有利於企業之成長與拓展[6]。

Taiwan Trademark 101 Series,   Distinctiveness

Written by: James Y. Chang

Attorney-at-Law

1. Trademarks Distinctiveness

The main function of a trademark is to identify the source of goods or services. If a sign cannot identify and distinguish goods or services, it does not have the trademark function and the registration cannot be approved. Distinctiveness is an important requirement for registration of a trademark [1] . The details of distinctiveness are as follows:

2.   Fanciful Marks

Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark [2] . Approved cases [3] :

     "GOOGLE" for search engine services

     " 震旦 " ("Aurora") for transmission services by telecommunications weighted networks

     " 普騰 " ("Proton") for television sets and stereo sets

       for cars and passenger cars.

3.   Arbitrary Mark

An arbitrary mark is a trademark that consists of a word which is used in a way that has nothing to do with its meaning. The use of the word will have nothing to do with its actual meaning. Arbitrary marks are inherently distinctive and the owner need not show secondary meaning to be entitled to protection for the mark because arbitrary marks bare no connection to the underlying goods and services [4] . Approved cases [5] :

 .    " 蘋果 APPLE," " 黑莓 BlackBerry" for computers and data processors.

     " 風信子 " ("Hyacinth") for cups, bowls and dishes.

     " 向日葵 " ("Sunflowers") for solar collectors.

     " 春天 " ("Spring") for restaurant and hotel services 

       for clothing.

4.   Suggestive Trademark

A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought, imagination or perception for the consumer to reach a conclusion as to the exact nature of the goods [6] . Approved cases [7] :

     " 快譯通 " ("Quick Translation Understandable") for electronic dictionaries.

     " 一匙靈 " ("One Spoon Effective") for laundry detergents in powder form.

     " 克潮靈 " ("Resisting Humidity Effective") for dehumidifying agents.

     " 靠得住 " ("Reliable") for sanitary napkins.

     " 足爽 " ("Foot Refreshing") for medicated ointment for H.K. feet.

       for chairs, rocking chairs, desks and chairs.

5. Acquired Distinctiveness

A trademark with no distinctive character is prima facie unregistrable. However, these marks may still allowed to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade marks office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness [8] . Approved cases [9] :

     "787", a simple number, is not distinctive.   However, after the applicant has long used it as a trademark in connection with airplanes and their parts and fittings, aircraft and their parts and fittings, and helicopters and their parts and fittings, such sign has caused a sufficient number of relevant consumers to recognize it as a sign identifying the source of goods and has acquired distinctiveness through use.

     "4810," the height of Mont Blanc, the highest mountain in Europe, is not distinctive. However, after the applicant has long used it as a trademark in connection with fountain pens, ball point pens, pencils, felt pens, etc., and used it extensively in the advertising media, such sign has acquired distinctiveness through use.

     "V50" for cars, trucks and all-purpose RV cars gives an impression that it is the model number of the designated goods and is not inherently distinctive. However, after the applicant has long used it, relevant consumers are able to recognize it as a sign identifying the source of certain goods, so it has acquired distinctiveness.

     "Life should be wasted on beautiful things," which is irrelevant to drinks made from tea leaves or tea, coffee, drinks made from coffee, cocoa and drinks made from cocoa, ice cream, etc., was not distinctive. However, after the applicant has long used it as a trademark in connection with aforesaid goods and used it extensively in the advertising media, such sign has acquired distinctiveness.

       is an ornamental pattern.   The use of the pattern for department stores, supermarkets, etc., is not inherently distinctive. However, after the applicant has long used it as a trademark in connection with handbags, packaging bags, etc., such sign has acquired distinctiveness.

Taiwan Trademark 101 Series,   Distinctiveness

Written by: James Y. Chang

Attorney-at-Law

1. Trademarks Distinctiveness

The main function of a trademark is to identify the source of goods or services. If a sign cannot identify and distinguish goods or services, it does not have the trademark function and the registration cannot be approved. Distinctiveness is an important requirement for registration of a trademark [1] . The details of distinctiveness are as follows:

2.   Fanciful Marks

Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark [2] . Approved cases [3] :

     "GOOGLE" for search engine services

     " 震旦 " ("Aurora") for transmission services by telecommunications weighted networks

     " 普騰 " ("Proton") for television sets and stereo sets

       for cars and passenger cars.

3.   Arbitrary Mark

An arbitrary mark is a trademark that consists of a word which is used in a way that has nothing to do with its meaning. The use of the word will have nothing to do with its actual meaning. Arbitrary marks are inherently distinctive and the owner need not show secondary meaning to be entitled to protection for the mark because arbitrary marks bare no connection to the underlying goods and services [4] . Approved cases [5] :

 .    " 蘋果 APPLE," " 黑莓 BlackBerry" for computers and data processors.

     " 風信子 " ("Hyacinth") for cups, bowls and dishes.

     " 向日葵 " ("Sunflowers") for solar collectors.

     " 春天 " ("Spring") for restaurant and hotel services 

       for clothing.

4.   Suggestive Trademark

A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; such a trademark might also be called allusive. However, a suggestive trademark requires a subtle leap in thought, imagination or perception for the consumer to reach a conclusion as to the exact nature of the goods [6] . Approved cases [7] :

     " 快譯通 " ("Quick Translation Understandable") for electronic dictionaries.

     " 一匙靈 " ("One Spoon Effective") for laundry detergents in powder form.

     " 克潮靈 " ("Resisting Humidity Effective") for dehumidifying agents.

     " 靠得住 " ("Reliable") for sanitary napkins.

     " 足爽 " ("Foot Refreshing") for medicated ointment for H.K. feet.

       for chairs, rocking chairs, desks and chairs.

5. Acquired Distinctiveness

A trademark with no distinctive character is prima facie unregistrable. However, these marks may still allowed to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade marks office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness [8] . Approved cases [9] :

     "787", a simple number, is not distinctive.   However, after the applicant has long used it as a trademark in connection with airplanes and their parts and fittings, aircraft and their parts and fittings, and helicopters and their parts and fittings, such sign has caused a sufficient number of relevant consumers to recognize it as a sign identifying the source of goods and has acquired distinctiveness through use.

     "4810," the height of Mont Blanc, the highest mountain in Europe, is not distinctive. However, after the applicant has long used it as a trademark in connection with fountain pens, ball point pens, pencils, felt pens, etc., and used it extensively in the advertising media, such sign has acquired distinctiveness through use.

     "V50" for cars, trucks and all-purpose RV cars gives an impression that it is the model number of the designated goods and is not inherently distinctive. However, after the applicant has long used it, relevant consumers are able to recognize it as a sign identifying the source of certain goods, so it has acquired distinctiveness.

     "Life should be wasted on beautiful things," which is irrelevant to drinks made from tea leaves or tea, coffee, drinks made from coffee, cocoa and drinks made from cocoa, ice cream, etc., was not distinctive. However, after the applicant has long used it as a trademark in connection with aforesaid goods and used it extensively in the advertising media, such sign has acquired distinctiveness.

       is an ornamental pattern.   The use of the pattern for department stores, supermarkets, etc., is not inherently distinctive. However, after the applicant has long used it as a trademark in connection with handbags, packaging bags, etc., such sign has acquired distinctiveness.

2015年科技法律學術研討會

日期: 104年五月一日

主辦單位：國立高雄第一科技大學科技法律研究所

                                      國立高雄第一科技大學創業管理碩士學位學程

地    點：國立高雄第一科技大學管理學院四樓C448

搖頭公仔可受那些智慧財產權的保護〈續〉                                                          實習律師 蘇思鴻
我國旅美知名的棒球投手甲在大聯盟屢創佳績，某乙看準當下商機，竟未得其同意，仿效該投手之身形樣貌，製作成造型可愛的搖頭公仔〈娃娃〉，並將該球員投球的英姿縮小成一吋相片大小，使用於其發行筆記本、拖鞋等商品，以增加商品的買氣，某乙的行為可能涉及那些智慧財產權？

爭點解析
名人的身形樣貌受智慧財產保護否？搖頭公仔受何種智慧財產權保障？將名人身形樣貌予以縮小，使用於商品上涉及那些智慧財產權？

結論：
本題將名人之身形樣貌予以縮小，使用於商品上，其情形類似於Air Jordan之商標，可以想見的是原則上可受商標權的保障，不過是不是可受商標權的保障仍要檢驗其是否符合商標的定義及商標之權利保護要件。據此，商標是一種在符合商標法第18條規定下，與商品或服務相結合之具識別性標識，除此之外需無商標法第30條所列各款事由，方得註冊取得商標權。故本題乙的行為涉及商標權，不過是否構成侵害商標權，端視是否已有相同或近似商標註冊於同一或類似的商品或服務，造成混淆誤認之虞，或是相同或近似於他人著名商標或標章，有致相關公眾混淆誤認之虞，或有減損著名商標或標章之識別性或信譽之虞而定。
 

搖頭公仔可受那些智慧財產權的保護                                                        實習律師 蘇思鴻
我國旅美知名的棒球投手甲在大聯盟屢創佳績，某乙看準當下商機，竟未得其同意，仿效該投手之身形樣貌，製作成造型可愛的搖頭公仔〈娃娃〉，並將該球員投球的英姿縮小成一吋相片大小，使用於其發行筆記本、拖鞋等商品，以增加商品的買氣，某乙的行為可能涉及那些智慧財產權？

爭點解析
名人的身形樣貌受智慧財產保護否？搖頭公仔受何種智慧財產權保障？將名人身形樣貌予以縮小，使用於商品上涉及那些智慧財產權？

結論
首先知名度〈名氣〉是那一種權利？我國有無保護名氣？是否名人才享有名氣的保護？簡單的說，名氣就是個人姓名財產化的保護，姓名在我國是人格權非財產權，而在美國名氣不僅是一種財產權，更是一種智慧財產權，其是由隱私權演化而來，而此種權利並非僅存在於名人，而係人人都有，只是通常名人才會去主張，一般人比較不會主張；試想一個默默無名的人，廠商會否將其姓名或樣貌使用於其商品或服務來做廣告行銷之用，以提升其買氣？即使廠商如此為之，若他人未得該人同意，將其姓名或樣貌使用於商品或服務上，係增加該人的名氣，即使有所侵害，該人亦不會因之興訟。美國之所以將名氣認定為財產權，主要是因為財產權可以讓與或繼承，一旦認定為人格權，在權利的行使上就受到限縮，而不可否認的是，肖像或姓名這些屬於人格權範疇的權利，在利用上不可諱言地產生財產上利益，已非僅具人格權性質乃是不爭的事實，然在我國因受限於歐陸法系框架，仍堅守樣貌或姓名屬於人格權，對人民權利的保護實屬不周。據此；本題乙將甲的樣貌身形製作成搖頭公仔，可解釋成侵害甲的肖像權，但限於甲生存時才可以依民法相關規定主張財產上和非財產上損害而獲賠，至於搖頭公仔依著作權法第五條第一項各款著作內容例示〈行政命令〉，其中第二條〈四〉美術著作：包括繪畫…美術工藝品及其他之美術著作，可認定為美術工藝品而受著作權法保障。本題的乙雖有可能侵害甲的肖像權，但並不當然代表侵害著作權，端視該搖頭公仔是否為乙自行創作而定，畢竟侵害肖像權和著作權係兩碼子事，這點要特別分清楚。〈其餘部分待續〉

參拙著美國名人權法制研究
 

Taiwan Trademark 101 Series, What is a Trademark?

Written by: James Y. Chang

Attorney-at-Law

1. What Does a Trademark Do

A trademark generally protects brand names and logos used for goods and services. It is generally a word, phrase, symbol, device, or even color, shape or packaging of goods, motion, hologram, sound, or a combination. The trademark is mainly used by a person in the course of business or trade to identify and distinguish the source of goods or services of one undertaking from those of another[1].

2. Trademark Distinctiveness

The main function of a trademark is to identify the source of goods or services. If a sign cannot identify and distinguish goods or services, it does not have the trademark function and the application of the registration can’t be approved. Distinctiveness is a must for the trademark registration[2].

3. Legislation Governing Trademarks

In Taiwan, the law that govern registration of trademarks is the Trademark Act. There are also administrative rules formulated by Taiwan Intellectual Property Office (TIPO), such as the Enforcement Rules of the Trademark Act, the Standards of Trademark Fees, Implementation Regulations for Customs to Detain Articles Infringing the Rights in the Trademark, that play important roles for the regulations of the Trademark in Taiwan.

4. Is It Mandatory to Register a Trademark?

It is not mandatory to register a trademark in Taiwan. You can use your trademark in the course of trade without any registration. However, your trademark will not be protected by the laws because it is not registered. If it were not registered, there will be a risk that other peoples are using your trademarks and you will be hard to assert legal rights against the infringers. However, if you just want to use an unregistered trademark, you are advised to go to TIPO database and find out if it is already registered or is still undergoing application process. This will help you to prevent from unknowingly infringing the trademarks rights of registered proprietors[3].

5. Advantages to Registering a Trademark

The registered trademark proprietor is entitled to have the statutory exclusivity rights during the valid period of time in Taiwan area. As the proprietor of a registered trademark, you will:

1. have the exclusive right to use your registered trademark for the goods or services specified in the registration;

2. have the right to authorize use by other people of your registered trademark for the goods or services specified in the registration;

3. have the right to sell the registered trademark or use it as a property to establish a pledge;

4. be able to stop people from using your trademark for the goods or services which might be covered by your trademark registration and causing confusion;

5. be able to request Customs to prevent the importation or exportation of goods that infringe your registered trademark; and

6. may take a legal action against infringers that use your registered trademark as their own on identical or similar goods or services without your consent.

The registered trademark enables you to protect your market share or profits better by preventing people from counterfeiting it[4].